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[wnorred]

1) Patent Office sends out a Notice of Missing Parts on 12/20/2010. No one notices the notice.
2) Patent Office sends out a Notice of Abandonment on 09/01/2010.

I'm left with fixing it. The circumstances and the Notice of Abandonment leads me to think that I need to file a Petition to Revive for Unintentional Delay, and a reply to the Notice of Missing Parts. I've prepared the fix on the Missing Parts, and am prepared to pay the $930 on the Petition to Revive, and the $65 for the Missing Parts.

But this brings me to the question of whether I should just go ahead and refile the whole thing. Cheaper and cleaner. Thoughts? Or am I missing something? Is this going to be a price of $995 total, or is there going to be yet another delay month since the Notice was sent out more than a month ago?

Thanks!

[NJ Patent1]

Oh s#!?.  The thought of such a scenario keeps me awake some nights.  To state the obvious, if you simply refile you loose the original filing date (and any priority claim to a provisional).  If the refiled application tanked bcs of some intervening prior art, you could be on the phone with your carrier.  Messy and expensive as it may be, rescuing the filing date appears to be the prudent course. One never knows what putative PA an Examiner will find.  I assume you (or whoever manages the relationship) have contacted the client, confessed the error, and proposed the two alternatives, accepting responsibility for all PTO the fees.  I suggest that you don't try to whistle past the graveyard.  According to a speaker at a CLE seminar I attended,  blowing a date is the second most frequent basis of client dissatisfaction ("priming the pump" for a malpractice suit).  Failure to communicate was the first..  Of course it may not be your call.   

Concerning fees due?  Sorry, I don't know off-hand.  I'd have to dig into the MPEP.  But my intuition is that yes, you'd have to pay all extension fees that would have been due had a response to the Notice been on the last possible day.

PS You typed unintentional delay.  Is that the same as unintentional abandonment? 
   

[wnorred]

The Notice of Abandonment states:

Under 37 CFR 1.137(b), a petition requesting the application be revived on the grounds of UNINTENTIONAL DELAY must be filed promptly after applicant becomes aware of the abandonment and such petition must be accompanied by: (1) a statement that the entire delay was unintentional; (2) the required reply to the above-identified Notice; (3) the petition fee set forth in 37 CFR 1.17(m); and (4) a terminal disclaimer if required by 37 CFR 1.137(d). See MPEP Sec. 711.03(c) and Form PTO/SB/64.

So I've fixed the Missing Parts issue (fixing the spec), and I've got a filled out SB-64, though it looks more like a checklist than anything else, an amendment with a written response regarding the missing parts, and making the statement that the delay was unintentional. No terminal disclaimer appears to be necessary.

Sigh...thanks for the reply.

[NJ Patent1]

wnorred:  Thanks, clear now.  FWIW I had a super close call wrt. an improper / incomplete Request to Suspend Prosecution.  Fortunately, it was my dumb luck that I had filed a prophylactic NoAppeal that (w/ payment of extension fees) saved my butt.  "Unintentional Delay" was not an escape hatch.  Phew, won't do that again!   Also, there was a recent SCOTUS death penalty case in which a court clerk in some SE state sent a clock-starting notice to a really big bad-a** NYC law firm.  The bro pono associate on the case had left the firm and the mail room sent the notice back, unopened, marked "return to sender".  The court clerk tossed it in the file.  The time to appeal the death sentence expired.  Now THAT'S a screw up.   

[Robert K S]

Complicating that case was the fact that counsel of record was not the big law firm mentioned but the local attorney who was on the case in name only and similarly disregarded the service.

A malpractice suit doesn't help much when you're dead.

[klaviernista]

1) Patent Office sends out a Notice of Missing Parts on 12/20/2010. No one notices the notice.
2) Patent Office sends out a Notice of Abandonment on 09/01/2010.

I'm left with fixing it. The circumstances and the Notice of Abandonment leads me to think that I need to file a Petition to Revive for Unintentional Delay, and a reply to the Notice of Missing Parts. I've prepared the fix on the Missing Parts, and am prepared to pay the $930 on the Petition to Revive, and the $65 for the Missing Parts.

But this brings me to the question of whether I should just go ahead and refile the whole thing. Cheaper and cleaner. Thoughts? Or am I missing something? Is this going to be a price of $995 total, or is there going to be yet another delay month since the Notice was sent out more than a month ago?

Thanks!

The dates don't make sense to me.  Was the notice of abandonment sent on 09/01/2011?

Petition to Revive for unintentional abandonment would probably work here.  But the longer you wait, the harder it will be to establish that the entire delay between the abandonment and the filing of a grantable petition was unintentional.

NJ patent hit the other issues, so I won't rehash them.

[BRMpat]

I inherited some abandoned applications a few years ago and here's what I learned.  You don't need to pay the late fees in addition to the petition fee.  In practice, the PTO will almost always accept unintentional petition without anything other than the form, the missing documents, and fees if you are one year from the date of abandonment.  Between one and two years, they will still rarely ask any questions.  More than two years and they want some detailed explanation regarding the delay.  Keep in mind that you've got to be able to ethically sign the form stating that the entire period of delay in filing the petition was unintentional.  From what I recall, waiting a few months from discovery of the abandonment is likely acceptable, but more than that and you may be in dangerous territory if it ever gets litigated.  Go ahead and file the petition now.